Count III: Counterfeiting

The Lanham Act defines a counterfeit mark as a "spurious mark which is

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identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127. Determination of whether certain imported articles bear a counterfeit mark is to be determined from the perspective of the average purchaser rather than from the perspective of an expert. See Montres Rolex, S.A. v. Snyder,718 F.2d 524 (2d Cir.1983). In this case, the marks are not identical or indistinguishable. While they are close enough for the average consumer to appreciate the parody, an interlocking "CV" is clearly distinguishable from an interlocking "LV", and the average purchaser would not confuse the mark of Chewy Vuiton products with those of Plaintiff. Nor are the coloring patterns and designs identical or indistinguishable. After considering both marks, this Court finds that no reasonable trier of fact could conclude otherwise. Therefore, this Court will grant Defendants' motion for summary judgment and deny Plaintiffs motion on this count.

Count IV: Copyright Violation

To prevail on a claim for copyright infringement, Plaintiff must show that (1) it owned a valid copyright; and (2) Defendants copied original elements of its copyrighted work.Trandes Corp. v. Guy F. Atkinson Co.,996 F.2d 655, 660 (4th Cir.1993)(citing Feist Publications, Inc. v. Rural Tel. Serv. Co.,499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)).

A. Ownership of the Copyright and Public Domain

Defendants first argue for summary judgment on the ground that Plaintiff does not own the Vuitton copyright design at issue, because it was not qualified as a "work for hire."⁶ As support for this argument, Defendants point to the web site www.eluxury.com, in which the copyright was noticed with the name of its designer, Murakami. However, Plaintiff has demonstrated that the copyright was assigned to LVM in 2002, and is the valid, rightful owner of the copyrighted design. Plaintiff has provided a copy of the assignment agreement to the Court, which shows LVM as the owner of "the copyright by assignment. (Pltf's Opp. Summ. J. Ex. D at ¶ 1). However, only a redacted version was provided to the Court, and material proof of ownership was not included. Id. Plaintiff also demonstrated, through affidavit facts, that the label on eLuxury's web site was a mistake that has since been corrected. Defendants also argue that the Vuitton marks were part of the public domain. The Court recognizes that a dispute of fact exists over ownership of the copyright, nonetheless, Defendants' successful invocation of the fair use defense makes resolution of this issue unnecessary for purposes of summary judgment. Because, as explained below, Defendants' use as a parody constitutes a fair use, Defendants are entitled to summary judgment on this issue regardless of any dispute as to the copyright's true ownership.

B. Defendants' Fair Use Defense

Defendants next argue that, even if a valid and enforceable copyright is owned by LVM, Defendants' use of the LVM design is a non-infringing, fair use of the copyrighted material for the purpose of parodying the LVM design. The Supreme Court has developed a test to determine fair use, by which courts are to consider by a totality of the circumstances:

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(1) purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational uses; (2) nature of the copyrighted work; (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole; (4) the effect of the use upon potential market for or value of the copyrighted work.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Fair use is an affirmative defense with the burden of proof on the defendant. Id.at 590, 114 S.Ct. 1164.

This Court must first consider the purpose and character of the use. Commercial use is one factor to be considered in determining fairness, and is not by itself presumptively unfair.Id. at 591, 114 S.Ct. 1164. Parody, even when done for the purpose of commercial gain, can be a fair use, as the Supreme Court has stated specifically that it is more likely that "the new work [a parody] will not affect the market for the original in a way cognizable under this factor, that is, by acting as a substitute for it." Id. at 591, 114 S.Ct. 1164. In this case, the use of similar marks and name in a line of dog chew toys and beds parodies the high-end fashion status of LVM's products in a market that LVM does not participate — the market for pet toys and beds. This Court finds that the use of similar markings and colors to those copyrighted by LVM for Chewy Vuiton products is a parody.

The next element, nature of the copyrighted work (creative) is a less-important factor for a parody case and "not much help" in separating infringers from parodies. Id. at 586, 114 S.Ct. 1164. Therefore, this Court will not address nature of the copyrighted work, other than to acknowledge that it is a creative design.

This Court will finally consider the amount and substantiality of the portion used in relation to the copyrighted work as a whole. The Supreme Court held that in a parody case, the parody itself

necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin. When parody takes aim at a particular original work, the parody must be able to "conjure up" at least enough of that original to make the object of its critical wit recognizable.

Id. at 588, 114 S.Ct. 1164.

In this case, the name "Chewy Vuiton" is an obvious wordplay on the name Louis Vuitton, and the superimposed C and V on the logo are intended to "conjure up" enough of the Louis Vuitton logo in order to make the object of its wit — a humorous play on Louis Vuitton's high-end image in the form of dog toys — recognizable. The parody is not possible unless the logo and name are similar to those of Plaintiff, and therefore such parody constitutes a fair use in this respect.

Finally, this Court considers interference with the potential market for plaintiff's original and derivative works caused by Defendants' actions. First, the market overlap between Plaintiff and Defendants is tenuous. Louis Vuitton's primary market is for high-end women's apparel, not pet toys. As explained supra, Plaintiff does sell some pet items, but not toys or beds, and only in a limited, high-end market. Second, Plaintiff has offered no evidence of interference with potential markets or control of its copyrights. Defendants, on the other hand, have presented deposition testimony and an expert declaration indicating that there has been no effect on LVM's potential markets or control of its copyrights. (Def.'s Mot. Summ. J. Ex. E-F). For the foregoing reasons, summary

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judgment should be granted for the Defendants.